Experience
Launch of New Social Media Network
Supervised and provided legal guidance for the successful launch of a new social media network that focuses on giveaways and user/company promotion and advertising.
IP Due Diligence for $900 Million Business Acquisition
Handled the IP due diligence for a client that acquired a payments technology company valued at about $900 million.
Protection of Global Footwear Company’s Intellectual Property
Represented a global company in the footwear industry regarding the maintenance of its intellectual property portfolio and the protection of its brand.
IP, IT Diligence for $135 Million Acquisition of Animal Health Products Manufacturer
Represented a manufacturer and marketer of pet care and nutrition products in its $135 million acquisition of a wholesaler of small-animal wellness brands. Handled diligence on all intellectual property and information technology aspects of the transaction.
Patent and Product Portfolio License
Represented a cable television provider in the license of a comprehensive product and patent license for interactive programming guide technology, in a transaction valued at over $300 million.
External IP Portfolio Manager for Multinational Company
Provided external IP management for a $1 billion+ multinational company for over 10 years, until they opened an internal IP function.
IP Due Diligence and Support
Providing due diligence in IP portfolio acquisitions and disposals (ranging from portfolios in the tens to hundreds of properties), including assisting in documentation and subsequent recordal of changes of ownership. Reviews of IP portfolios for small and large clients to assess fitness to support business aims.
Resort to the Court of Chivalry
When a client found that their coat of arms was being used as a trademark by a competitor, pointed out to competitor that the Court of Chivalry still existed, resulting in the competitor ceasing use of the coat of arms.
Acted in Strategically Important EUIPO Appeal Decision Based on Noncompliance with Underlying Law
Secured a strategically important victory by identifying that the European Union Intellectual Property Office's practice did not comply with the underlying law concerning translations, in a wider commercial dispute, where infringement proceedings had been filed in Germany and client’s business customers had received cease and desist letters directly.
Acted in Complex Joint EU Revocation and Invalidation Action Brought by Former Licensees
Acted for one of the world's largest CD and DVD media distributors in a complex joint EU Revocation and Invalidation action brought by its former licensees, which was appealed to the European Court of First Instance (now the General Court) triggering tense settlement negotiations.
Assisted Small Business Against Aggressive Parties
Advised a client facing a series of disputes. Liaised with defence counsel to head off spurious criminal charges of intellectual property infringement raised by aggressive party, persuaded a third party that an alleged infringement was not worth pursuing, and generally helped protect client from hostilities.
Advised Clients on Computer-implemented Inventions
Assisted multiple clients in obtaining patents for computer-implemented inventions, which have traditionally posed difficulties in prosecution before the European Patent Office.
Represented Clean Energy Client in Growth of Multimillion-Pound IP Portfolio
Represented a domestic client in the field of clean energy, drafting and prosecuting patent applications in the U.K. and internationally. The client has now grown from a small startup to encompass two entities who have received millions of pounds in investment on the strength of their IP portfolio.
Successful Enforcement of Global Intellectual Property Rights
Enforced and defended trademarks, copyrights and patent rights for a jewelry designer and retailer against third-party infringers.
Patent Preparation and Prosecution for Leading Consumer Electronics Company
Prepared and prosecuted patent applications for leading consumer electronics company for technologies relating to wearable and telecommunication devices.
Defense of National Direct Sales Company in Misappropriation Case
Successfully defended a nationally recognized direct sales company against allegations that it misappropriated a competitor’s trade secrets in violation of the Illinois Trade Secrets Act.
Trademark Protection for U.S. Home Goods Manufacturer
Represented a U.S. home goods manufacturer helping it protect the trademark related to its iconic product by asserting trademark infringement, unfair competition and dilution claims under the Lanham Act.
Representation of Camping, Music Festival Promoter in Infringement, Cybersquatting Case
Represented camping and outdoor music festival promoter in a trademark infringement and anti-cybersquatting case in federal court. After filing a complaint and motion for temporary restraining order (TRO), the defendant capitulated to such an extent that there was no need to go forward with the TRO hearing.
Favorable DMCA Settlement for Overseas Distributor of Skincare Products
Obtained a favorable early settlement of a copyright infringement and Digital Millennium Copyright Act case for an overseas distributor of skincare products and multiple nationally recognized retailers. The plaintiff, an artist, claimed the defendant’s product packaging infringed his copyrighted artwork. The case spanned two continents, including suits filed in New York and London.
Assisted London Marathon Events in Acquisition of Brighton Marathon
Assisted London Marathon Events in acquiring the business and certain assets of Grounded Events Limited (in administration) (the company name for Brighton Marathon) from the Administrators (FRP Advisory). This included, amongst others, Brighton Marathon’s brand and intellectual property. Also acted for London Marathon Events on the grant to it of a licence to hold the event from Brighton & Hove City Council.
Counsel to LAVA Therapeutics in Multimillion-Dollar Global License Agreement
Served as IP counsel to client LAVA Therapeutics, a clinical-stage immuno-oncology company, in a multimillion-dollar global license agreement with Seagen, Inc., a world leader and pioneer in antibody-drug conjugate (ADC) therapies. The exclusive license agreement will enable Seagen to develop, manufacture and commercialize LAVA-1223, an advanced preclinical asset that utilizes LAVA’s proprietary Gammabody™ technology to target epidermal growth factor receptor (EGFR)-expressing solid tumors, most commonly associated with colorectal, lung, head and neck cancer.
Management of U.S. and Foreign Patent Families for Major Medical Device Companies
Managed multiple U.S. and foreign patent families and provided strategic counsel for medical device companies involving technologies related to fluorescent imaging, vascular occlusion, neuromodulation, and renal and cardiovascular devices.
IP Due Diligence in $3.4 Billion Acquisition of Medical Device Manufacturer
Led IP due diligence for a major medical device company, including in-depth research and analysis of both the target company and its competitors, resulting in our client’s decision to move ahead with its $3.4 billion acquisition of a medical device manufacturer.
EPA Clearance for Large, Global Chemical Producer
Managed multiple EPA clearance searches and analyses for one of the largest international chemical producers in the world.
Successful Chemical Plant Clearance
Cleared all chemical engineering processes and related products for a major chemical plant in the U.S. for one of the largest international chemical producers in the world.
Successful Product Clearance in China, India and Indonesia
Cleared an entire consumer product line in China, India and Indonesia for one of the largest food companies in the world.
U.S. National Applications for Multibillion-Dollar Foreign Clients
Managed the filing and prosecution of extensive U.S. National (371) applications for a number of multibillion-dollar foreign clients. Armstrong Teasdale represents clients based in China, Japan, Singapore, the United Kingdom, Germany, Australia and many other countries.
Portfolio Management, Strategic Direction for Multiple Consumer Products, Health Care Companies
Managed global patent portfolios for and provided strategic counsel to multimillion-dollar consumer products and health care companies in the U.S. and abroad, including preparation and prosecution, opinion work, Inter Partes Review work and litigation.
Risk Analysis for Use of Celebrity's Name and Likeness in Literary Work
Provided analysis and recommendations regarding liability risk associated with use of a famous celebrity's name and likeness in an original literary work. The project included an in-depth review of the legal concepts of right of publicity, invasion of privacy, misappropriation, false light and defamation.
Filed Trademarks for Retirement Plan Provider in Naming of Major Sports Stadium
Served as IP counsel to a retirement plan provider related to their involvement in purchasing naming rights to a major U.S. sports stadium. Provided counsel on and filed for trademark protection of names and logos following multi-year deal.
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